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Posts Tagged ‘Trademark Registration Lapse’

Someone Is Getting a Raw Deal With TEXTRAW

Friday, July 2nd, 2010

There have been two interesting domain name disputes in two days, dealing with the same mark, resulting in the same manner, but for different reasons. IN the wacky world of domain name and trademark ownership, one can never really guess as to the facts and arguments presented by parties involved in disputes. In the first case, Mt. Vernon Mills, Inc. v. River City Holdings, LLC FA1325209 (Nat. Arb. Forum June 30, 2010) a single member Panel was faced with a dispute over the domain www.textraw.com. The Panel made the following relevant factual findings.

On September 8, 2006 Complainant purchased assets from the Georgia, USA corporation Textraw, Inc. which included the trademark registration for a trademark TEXTRAW which had been registered with the USPTO under number 2,710,148 on April 22, 2003. On November 28, 2009 the TEXTRAW trademark was cancelled. Complainant had no registered TEXTRAW trademark at the date of filing its complaint. In March 2009 Respondent obtained the domain name <textraw.com> through Complainant. Respondent makes no active use of the domain name.

Paragraph 4(a) of the ICANN UDRP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In light of the findings the Panel reviewed the first element and found that Complainant did not have adequate common law rights, since they failed to present evidence of adequate sales, advertising etc. or show that the mark has secondary meaning. By failing to satisfy the first element, the decision was essentially done, but the Panel chose to review the remainder of the elements. Ultimately the Panel DENIED the request for transfer.

In the second domain name dispute, Mt. Vernon Mills, Inc. v. River City Holdings FA1325214 (Nat. Arb. Forum, July 1, 2010) a single member Panel also DENIED a request for transfer regarding two domains, www.textraw.net  and www.textraw.org. The Panel noted that the parties entered into an agreement on March 16, 2009 which expired on March 15, 2010. The Domain Names were registered by Respondent during the course of that agreement. Complaint had filed a Notice of Opposition to Respondent’s application for federal trademark rights in TEXTRAW. A search of the USPTO records shows that on December 3, 2009 two applications were filed for TEXTRAW (Ser. No. 77885495 and 77885343) by a company named Synco Turf, LLC. The Panel also noted that Complaint has filed other court proceedings related to the ownership and the trademark in Court of Common Pleas, Greenville County, South Carolina, C.A. No. 2010-CP-23-4101.

In light of the court case and the TTAB case, the Panel explained that those proceedings will be critical to the outcome of this UDRP decision. As a result the Panel DENIED the relief requested by Complainant, without prejudice and may seek to refile a Complaint after the other proceedings are finished.

Lorillard Smokes Out Typosquatter

Wednesday, July 22nd, 2009

In the recent domain name dispute decision of Lorillard Tobacco Company, Lorillard Licensing Company LLC v. Bao Shui Chen (WIPO D2009-0743, July 16, 2009), a single member Panel was faced with a dispute over the domain www.lorilard.com. Complainants manufacture and sell cigarettes in the U.S and in other countries throughout the world. They own trademarks registrations for LORILLARD and maintain a web site at www.lorillard.com. Respondent failed to respond to this dispute.

Under the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted the disputed domain is identical to Complainants’ marks except for the omission of one of the L’s from the word. The Panel found the disputed domain was at least confusingly similar to the marks.

Moving to the second element, the Panel noted that (i) Respondent was not commonly known by the disputed domain, (ii) there was no evidence of authorization to use it, and (iii) has never asserted any rights or legitimate interests in the domain. Therefore, the Panel found the Complainants satisfied this element as well.

Moving to the final element, bad faith, the Panel explained that the disputed domain spelling of “lorilard” had no independent existence or meaning besides a misspelling of Complainants’ marks. The Panel quoted another decision dealing with typosqautting which stated as follows:

“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source” of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services.” (See Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568)

The Panel also found that the Respondent had a history of being found in bad faith with regards to registrations. For these reasons, the Panel found that Complainants satisfied all three elements and ordered the disputed domain be TRANSFERRED.

Don’t Forget to Renew Your Trademark-Otherwise Domain is Lost

Monday, September 29th, 2008

A company found out the hard way, that not only must you remember not to let your trademark registrations lapse, but you must remember to renew your domain registrations. In O’Reilly Automotive, Inc. v. Bjarne Lorenzen FA 1220459 (Nat. Arb. Forum Sept. 24, 2008), the domain transfer was DENIED and Mr. Lorenzen of Denmark was able to keep the registration of www.partscity.com. Complainant is an automotive parts retailer who was the owner of federal registrations (Reg. Nos. 2,312,510 and 2,233,940) for the mark PARTS CITY. Unfortunately, those registrations were cancelled on December 31, 2005 and October 28, 2006. Complainant did get a new registration for PARTS CITY on July 15, 2008 (Reg No. 3,465,437). Complainant operated the disputed website until it inadvertently lapsed on June 10, 2003. The Respondent registered the domain on August 23, 2003. The decision does  not indicate how Complainant was using the domain prior to its lapse, nor why it did not notice the loss of the domain for the two months prior to its acquisition by Respondent.

The Panel reviewed each of the three (3) elements of the UDRP policy. First, the Panel noted  that Complainant had not established the identical and/or confusingly similar element. Although this element seems to not require a timeline of trademark ownership, the Panel relied upon other decisions which established that Policy ¶4(a)(i) assumes the Complainant’s rights must predate Respondent’s domain name registration. The Panel noted, “the UDRP was not established to assist current business owners in correcting poor business decisions of the past.”

The Panel also found that the Complainant had not established the second requirement of Rights or Legitimate Interests. In an effort to prove bad faith, Complainant’s own allegations that Respondent is a competitor selling automotive parts, helped to support the finding that Complainant’s rights are therefore junior to Respondent’s registration of the domain. The panel further noted:

Complainant would have the Panel find that it has protectable rights in the domain name despite letting it lapse and languish for months while Respondent has no such rights despite validly registering the unclaimed name and holding it in an undeveloped state for years. Holders of valid domain names are not required to develop them in any particular way within a fixed time or risk losing them, especially when they are not using the domains in a manner that is offensive to the rights of another.

Third, the Panel reviewed the Bad Faith element. The Panel noted that “Complainant’s assertion that merely holding a parked domain disrupts its business because it can not use that domain name for its own benefit does not satisfy this element. Fair competition should not be confused with bad faith use or registration.”

Ultimately, the Panel DENIED the Request for Transfer.

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